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DECISION' 


IN THE 


GREAT INDIA RUBBER CASE 


OF 


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CHARLES GOODYEAR 


V'S. 


HORACE H. DAY. 


DELIVERED SEPTEMBER 28th, 1852. 


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THE CAUSE HAVING BEEN ARGUED AT THE LAST MARCH TERM OF THE < 
UNITED STATES CIRCUIT COURT AT TRENTON, N. J., BEFORE JUDGES 


GRIER AND DICKERSON, BY DANIEL WEBSTER AND JAMES 
T. BRADY, FOR THE PLAINTIFF, AND RUFUS CHOATE 
AND FRANCIS B. CUTTING, FOR THE DEFENDANT. 




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DECISION 


IN THE 


GREAT INDIA RUBBER CASE 


OF 


CHARLES GOODYEAR 


vs. 

HORACE H. DAY. 


DELIVERED SEPTEMBER 28th, 1852. 


THE CAUSE HAVING BEEN ARGUED AT THE LAST MARCH TERM OF THE 
UNITED STATES CIRCUIT COURT AT TRENTON, N. J., BEFORE JUDGES 
GRIER AND DICKERSON, BY DANIEL WEBSTER AND JAMES 
T. BRADY, FOR THE PLAINTIFF, AND RUFUS CHOATE 
AND FRANCIS B. CUTTING, FOR THE DEFENDANT. 


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IN THE 


CIRCUIT COU RT, 

OF THE 


UNITED STATES. 

DISTRICT OF NEW-JERSEY. 
May Term —1852. 


Charles Goodyear 
vs. 

Horace H. Day. 


Bill in Equity ; heard on 
Pleadings and Proofs. 


Grier, J.—The bill in this case sets forth that, since 1843, Charles Good¬ 
year has been, and now is, the owner of certain new and useful improvements 
in the preparation of India Rubber for manufacturing purposes, by which the 
properties of this substance are greatly changed and improved. It is rendered 
insensible to heat and cold, within certain degrees of temperature. Its 
clammy and sticky character is taken away, and it is made proof against 
the effects of fat and grease, or expressed oils, while the strength, elasticity, 
and other good qualities of the original substance, are retained and im¬ 
proved. 

That these improvements were secured to complainant by letters patent— 
the first, dated 24th of February, 1839, on a discovery of Nathaniel Hay¬ 
ward, of Woburn, Mass., assigned by him to Goodyear. This patent was 
for the application of sulphur in the curing of India Rubber. After this, 
the complainant, Goodyear, in 1840, commenced, and continued for several 
years, his experiments on India Rubber, in order to discover some method 
of rendering this substance insensible to cold and heat, and freeing it from 
the clammy properties which injured the use and sale of goods theretofore 
manufactured from it. For want of these qualities, all the manufacturers 
of this substance have heretofore foiled, and many been ruined. 

That, struggling under many discouragements and difficulties, from his 
poverty and want of means, he continued his experiments for two or three 
years ; and after repeated failures, and much loss of time and materials, in 
the latter part of the year 1843 he discovered that by applying a very high 
degree of artificial heat (from 250 degs. to 300 degs. of Fahrenheit) 4o the 
substance, when compounded with certain proportions of sulphur and car¬ 
bonate of lead, or other metallic bases, the qualities so much desired would 
be imparted to it. 

That for this discovery or improvement in the art of manufacturing In¬ 
dia Rubber, he obtained a patent on the 15th June, 1844. 

This patent, owing to defects in its specification, was surrendered, and 
another issued on the 25th of December, 1849, with an amended and more 
perfect specification. 

That about the time the patent of 1844 was obtained, the complainant 


( 




4 


JUDGE GRIER’S OPINION. 


sold to David L. Suydam, of New-York, the right to use said discovery 
and improvement in the manufacture of shirred or corrugated goods, for 
which license said Suydam agreed to pay the sum of 815,000. 

That soon after Suydam had commenced manufacturing shirred goods, 
the respondent Day commenced the same business, in violation and disre¬ 
gard of the rights granted by said patent to Goodyear. 

That Day, by overstocking the market with an inferior article, and deny¬ 
ing the validity of said patents, so annoyed, vexed, and discouraged said 
Suydam, that he refused to go on with his contract, or to pay the 815,000, 
and re-transferred his license to complainant. That suits at law and in 
equity were instituted against Day and his agents, both in New-York and 
Boston. To these suits Day set up, as a defence, that said patents were 
void, because Hayward and Goodyear were not the inventors or discoverers 
of the improvements set forth therein. That, after much preparation made 
on both sides for the trial of these issues, at November Term, 1840, Day 
applied to Goodyear to settle and discontinue the suits, offering to confess 
judgment on one of them, to pay 5,000 damages, and buy from Goodyear 
a license for the exclusive manufacture of shirred goods under said patents, 
to pay three cents per yard, and stamp the* goods with Goodyear’s name, 
and not to make any other article to infringe the patents. That these terms 
were accepted, articles of agreement executed, and all the suits discontinued 
and released by complainant, except one on which judgment was entered in 
favor of the plaintiff, which was satisfied by the payment of the said $5,000 
damages by Day. Since that time Day, in utter disregard of his contract, 
and of the rights secured to complainant by said patents, has commenced 
to manufacture other articles than shirred goods, and sell them in large 
quantities, to the great injury of the complainant. 

The bill prays that the defendant may render an account of the articles 
made and sold by the respondent, in disregard of the patents of complain¬ 
ant, and not included in the license from him to defendant; and for an in¬ 
junction against Day, restraining him from the further infringement and 
violation of said patents. 

The defendant, Day, in his answer, denies— 

1st. That Goodyear is the owner of any new and useful improvements, 
as claimed by the bill. 

2d. Admits a patent was granted for an invention of Hayward’s, but de¬ 
nies that it vested in Goodyear any exclusive right to the use of sulphur in 
the manufacture of India Rubber goods, for that the invention of Hayward 
was in public use, with his consent and allowance, before the application for 
a patent. 

3d. He denies that Goodyear was the first inventor or discoverer of the 
beneficial effects of a high degree of heat applied to India Rubber. 

4tlj. The answer then sets forth in hccc verba the patent to Goodyear of 
15th June, 1844, and proceeds to enumerate various companies and indi¬ 
viduals, who are alleged to have manufactured India Rubber with sulphur, 
white lead, and a high degree of heat. 

5th. Without denying directly the infringement by defendant of complain- 
an’s patents, the answer alleges that he has not used, in the manufacture of 
India Rubber goods, a combination of gum, sulphur, and white lead, in the 
proportions claimed specially in said letters patent. 

6th. The answer proceeds to deny that Goodyear is the inventor of shirred 
or corrugated goods, and proceeds to name others who made and used them. 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


5 

As the bill has no such charge or allegation, this part of the answer need 
not be further noticed. 

7th. That complainant, in 1849, surrendered his patent of 1844, and took 
out two new patents, one for an improvement in felting India Rubber with 
cotton fibre; that both the re-issued patents are void, for various reasons 
set forth at length. 

8th. The answer repeats frequently that the defendant used all the combi¬ 
nations of the patent of 1844 more than two years before that time; and 
enumerates some twelve patents, the use of which he has purchased, 
and alleges that the re-issued patent of complainant interferes with some of 
them. 

9th. The answer admits the suits brought against defendant for infringe¬ 
ment of Goodyear’s patents ; the settlement and discontinuance of said 
suits, aDd sets forth the articles of agreement executed by the parties at 
length, taking some collateral issues as to some immaterial circumstances 
connected therewith, which need not be mentioned. 

10th. That Goodyear wilfully and fraudulently deceived the defendant, to 
induce him to enter into the said agreement, giving no other reason for the 
assertion, however, than that William Judson was a part owner of Good¬ 
year’s patents at the time. 

11th. That William Judson, James A. Dorr, and John Haskins, are parties 
in interest, and should be made parties complainant. 

12th. That Goodyear did not protect defendant in the exclusive rights guar¬ 
anteed to him by the agreements. 

13th. That when this agreement was made, the defendant “meant to re¬ 
serve his right” to manufacture in any way he pleased the moment Good¬ 
year failed to protect him in the exclusive right of manufacturing shirred 
goods ; and because this was done, had “ repudiated his said contracts,” and 
pleads such repudiation in bar of this bill. 

14th. That complainant is barred from recovering the tariff covenanted in 
the articles to be paid on shirred goods, up to 1st of January, 1849, by a 
verdict and judgment at law in a suit tried in this court. 

15th. That Goodyear’s patent of 1844 was invalid, by reason of combining 
two separate inventions—one for rubber compound, the other for felting 
cloth (the latter of no value); that the claim in the patent of 1849 is fraud¬ 
ulent, because it claims the “application of heat to the curing of rubber;” 
that by this surrendered and fraudulent renewal of his patent, Goodyear has 
annulled said articles of agreement. 

16th. That defendant has not used the compound described in Goodyear’s 
patents of 1844 and 1849, but has used other and better compounds. 

17th. The answer concludes by praying “ a trial by jury of the various issues 
of fact formed by it.” 

If the value of the subject matter in controversy in this case be in any 
measure proportionate to the amount of costs and expenses, the number of 
volumes of printed record, the number and eminence of the counsel, or the 
zeal and ability displayed in the argumeut, it must be one of great import¬ 
ance to the parties in its results, if not in its principles. 

Numerous points, both of fact and law; have been argued and submitted 
by the counsel, many of which might have been avoided, if such had been 
the desire of the complainant, by the form of the bill. Much of the answer 
also, is occupied with matter either wholly irrelevant or merely tending to 
evade the consideration of the case. 


v. 


V 




G 


JUDGE GRIER’S OPINION. 


Wo shall, therefore, only notice such points stated in the answer as have 
been relied on in the argument, without further criticism of the pleadings 
than to say, that the defendant is not estopped from denying the validity of 
complainant’s patents, although he would have been if the bill had contained 
proper averments. 

I. The first question in their natural order for our consideration, is whether 
the bill should be dismissed for want of proper parties. It has been contend¬ 
ed that this bill should be dismissed, because John Haskins, William Jud- 
son, and James A. Dorr have not been made parties. 

Haskins was but a mere licensee of the complainant; and although such 
licensees may be benefited indirectly by a decree in favor of complainant, 
they are not necessary parties. Besides, the agreement with Haskins if not 
surrendered to plaintiff, has been long abandoned, and cannot be invoked 
to affect the merits of this case in any manner. 

The assignments to Dorr and Judson contain certain words, which, if ta¬ 
ken alone, would convey a legal title to certain undivided interests in the 
patents; but when we examine the whole instrument, it clearly appears that 
the intention of the parties was not to convey the legal title to any portion 
of the patent. It reserves the whole and sole power of disposal, and, con¬ 
sequently, title to Goodyear. Dorr and Judson are cestui que trusts , enti¬ 
tled to a share of the profits made by such sales. The defendant has dealt 
with Goodyear. Dorr and Judson are no parties to the contract. The in¬ 
junction, if decreed, may be beneficial to them, and they may be entitled to 
a share of the damages recovered, in their settlement with Goodyear. We 
do not think that they are necessary as parties, in order that the court may 
make a full and final decree. They were present in court, are willing to be 
made parties on the record, if necessary, and if any difficulty should be anti¬ 
cipated on that subject, the court will suspend the decree till they are made 
parties, and consent to be bound by it. See Story, on Eq. PI. §237. We 
do not therefore, consider this difficulty as such a one as should stand in 
the way of our proceeding to a final decree in this case. 

II. Another objection on which the defendant resists the decree for an in¬ 
junction is, that the complainant has not established his title at law. It has 
been argued by the counsel for defendant, that the verdict of a jury on the 
question of the validity of a patent, is absolutely required by the practice of 
courts of chancery, before granting a final injunction ; and that this is a right 
or privilege which the court is bound to accord to the defendant, when the 
answer takes issue on this point. 

It is true that in England the Chancellor will generally not grant a final 
and perpetual injunction in patent cases, when the answer denies the validity 
of the patent, without sending the parties to law to have that question deci¬ 
ded. But even there the rule is not absolute or universal; it is a practice 
founded more on convenience than necessity. It always rests on the sound 
discretion of the court. A trial at law is ordered by a Chancellor to inform 
his conscience; not because either party may demand it as a right, or that 
a court of equity is incompetent to judge of questions of fact, or of legal 
titles. 

In the courts of the United States, the practice is by no means so general 
as in England, or as it would be here, if the trouble of trying issues at law 
devolved upon a different court. 

Cases involving inquiries into the most complex and difficult questions of 
mechanics and philosophy, are becoming numerous in the courts. Often 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


7 


questions of originality, and infringement of patents, do not depend so 
much on the credibility of witnesses or the weight of oral testimony, as on 
the application of principles of science and law to admitted facts. It is true, 
that in matters of opinion, both mechanics and learned professors will differ 
widely. But still the question is not to be decided by the number, credi- 
bility, or respectability, of such witnesses; but by the force and weight of 
the reasons given for their respective opinions. It is no reflection on trial 
h J j ur y sa y> that cases frequently occur, in which ten out of twelve jurors 
do not understand the principles of science, mathematics, or philosophy, ne¬ 
cessary to a correct judgment of the case. Besides, much of the time of 
the courts is lost, where twelve men will not agree on any verdict; or when 
they have agreed, the conscience of the Chancellor, instead of feeling en¬ 
lightened, rejects it altogether. 

A select or special jury of philosophers, if they could be got, would per¬ 
haps not prove more satisfactory or obviate the difficulty. In the late case 
involving the validity of Morse’s telegraph patents, which was heard in 
Philadelphia, a final injunction was decreed without a verdict to establish 
the patents ; and many other cases might be cited from other circuits, if ne¬ 
cessary, in support of this practice, showing that the courts of the United 
States do not always consider it a proper exercise of their discretion to or¬ 
der such issues to be tried at law, before granting a final injunction. 

In the present case there are many reasons why the court will not thus 
exercise their discretion : 

1st. Because this case has been set down for final hearing on the exhibits 
and proofs, without any motion or order of the court for such an issue. 

2d. After a patient hearing of very able counsel, and a careful considera¬ 
tion of the testimony, the court feel no doubt or difficulty on these questions, 
which would be removed or confirmed by a verdict. 

3d. It would require three or four weeks at least, to try this case before a 
jury, if this library of testimony were read to them ; and at least as many 
months, if the witnesses were examined viva voce, as they probably would 
be ; and, after all this expenditure of time and labor, it is even more than 
probable, that from the confusion created by the great length of the testi¬ 
mony and argument in court, or the force and effect of those urged from 
without, no verdict would be obtained, and most certainly none that would 
alter the present conviction of the court. 

4th. But even if it were the right of the defendant to demand such an issue 
in ordinary cases, there are sufficient reasons why it should not be accorded 
in this. 

This defendant commenced his infringement of the plaintiff’s patent soon 
after they were issued. Actions at law were brought against him and his 
agents ; the cases were prepared for trial; the defendant found he could 
not defend himself, and he agreed to give judgment on one of the suits; he 
paid damages for his infringements; he purchased a license to use plain¬ 
tiff’s discovery in the manufacture of shirred goods; he covenanted not to 
use it in the manufacture of any other than the articles specified in his license ; 
he does not allege any mistake or misrepresentation, or the discovery of 
any new evidence or fact since that time, or that any one but himself dis¬ 
putes the complainant’s rights, or invades them with impunity. All these 
facts are apparent on the face of the pleadings, and do not entitle the de¬ 
fendant to any claim of favor in the use of our discretion, or to any action 
of the court which will add to its enormous expenses, and greatly protract 
the results of this suit. 


8 


JUDGE GRIEr’s OPINION. 


III. Without requiring the aid of a jury, we shall therefore proceed to ex¬ 
amine the questions, both of fact and law, which affect the validity of com¬ 
plainant’s patents. 

The patents are themselves sufficient prima facie evidence that the paten¬ 
tees were the original inventors or discoverers of the things patented, and 
that the same are new,and useful. Since the patent act of 1836, the Com¬ 
missioner of the Patent Office acts quasi judicially on these subjects. lie is 
bound to inquire and decide them, before granting a patent, but as they 
proceed ex parte, their action is not conclusive on those who were not 
parties to the proceeding. The burthen of proof, therefore, lies on the 
defendant, to show that any other persons than Hayward and Goodyear 
were the original inventors or discoverers of the things patented. 

To give a history of the various experiments on the substance called Ca¬ 
outchouc or India Rubber, and of their success or failure, previous to those 
of Hayward and Goodyear, or to notice particularly the testimony of each 
of the hundred witnesses who have been examined, w'ould require us to add 
another to the numerous volumes which already encumber this case. Being 
unwilling to inflict on ourselves the labor of writing, and on others that of 
hearing or reading such a treatise, we shall not attempt to vindicate the cor¬ 
rectness of our decision by analyzing the testimony, and arraying the volume, 
page and folio, which justifies our conclusions, but shall merely state the 
results to which we have arrived, after careful consideration of the whole 
case. 

Previous to the years 1834 and ’35, many experiments had been made, 
and much capital expended in attempts to manufacture Caoutchouc, or India 
Rubber ; or rather to employ it in the manufacture of various articles for 
the purpose of imparting to them the peculiar quality of this substance. All 
attempts to do this in a satisfactory manner had been in a great measure, 
if not wholly, unsuccessful. The defects in the article manufactured on the 
various plans and discoveries thus far made, were such as to destroy their 
value in market. The goods became clammy and sticky by heat; they 
were made hard and stiff by cold. It is true that in this variety of experi¬ 
ments and failures, many facts and processes had been discovered which 
were partially beneficial, but the great and important fact, that India Rub¬ 
ber could, by any treatment or combination, be made to assume the 
peculiar and valuable qualities now known to be possessed by the mate¬ 
rial or substance called “Vulcanized India Rubber,” had not been dis¬ 
covered. 

About this time Goodyear commenced his experiments. Por a long 
time he was unsuccessful. He spent his money, his time, his credit. 
His family was reduced to poverty, and himself immured in a prison. 
\ et still he persisted. And finally his faith and energy were rewarded 
by the discovery, the value of which this controversy most abundantly 
proves. As we know a substance only by its qualities, he may be said 
to have discovered a new substance; or at least the fact that India Rub¬ 
ber, by certain combinations and manipulations, could be made to assume 
certain valuable qualities which it did not before possess, and the mode of 
imparting them. 

Previous to this time, Nathaniel Hayward had discovered that sulphur 
could be used to great advantage in drying the Rubber, and had assigned 
his right to this discovery to Goodyear, and a patent had been issued. 

It was not till 1844, when Goodyear had perfected his invention by contin- 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


9 


ued experiments, that he obtained a patent. This patent was afterwards 
found to be defective, and was surrendered and canceled, and a new one 
granted in 1849. 

As the answer does not put in issue the originality of Hayward’s discovery, 
we need not notice it further at present than to say, that, notwithstanding 
the attempt to controvert this fact on the argument from certain testimony 
in the case, it was wholly unsuccessful. The defendant need not regret the 
candor of his answer in admitting it. 

The question now under consideration is, therefore, whether any other 
person had succeeded in discovering and perfecting the peculiar process or 
manufacture claimed in the patent of 1844 and 1849, before Charles 
Goodyear? Was “vulcanized India Rubber,” as now known in the arts, 
known, and the process of manufacturing it perfected, before Charles 
Goodyear made known his discovery, and had perfected it by experiment ? 

The testimony shows that many persons had made experiments—that 
they had used sulphur, lead, and heat, before Goodyear’s patents, and, pro¬ 
bably, before his discovery. But to what purpose? Their experiments 
ended in discovering nothing, except, perhaps, that they had ruined them¬ 
selves. The great difference between them and Goodyear is, that he per¬ 
sisted in his experiments, and finally succeeded in perfecting a valuable dis¬ 
covery, and they failed. It is usually the case, when any valuable disco¬ 
very is made, or any new machine of great utility has been invented, that 
the attention of the public has been turned to that subject previously ; and 
that many persons have been making researches and experiments. Philoso¬ 
phers and mechanicians may have, in some measure, anticipated, in their 
speculation, the possibility or probability of such discovery or invention; 
many experiments may have been unsuccessfully tried, coming very near, 
yet falling short of the desired result. They have produced nothing benefi¬ 
cial. The invention, when perfected, may truly be said to be the culmi¬ 
nating point of many experiments, not only by the inventor, but by many 
thers. He may have profited indirectly by the unsuccessful experiments 
°and failures of others; but it gives them no right to claim a share of the 
honor or the profit of the successful inventor. It is when speculation has been 
reduced to practice, when experiment has resulted in discovery, and when 
that discovery has been perfected by patient and continued experiments— 
when some new compound, art, manufacture, or machine, has been thus pro¬ 
duced, which is useful to the public, that the party making it becomes a 
public benefactor, and entitled to a patent. 

And yet when genius and patient perseverance have at length succeeded, 
in spite of sneers and scoffs, in perfecting some valuable invention or dis 
covery, how seldom is it followed by reward ! Envy robs him of the honor, 
while speculators, swindlers, and pirates, rob him of the profits. Every 
unsuccessful experimenter who did, or did not, come very near making the 
discovery, now claims it. Every one who can invent an improvement, or 
vary its form, claims a right to pirate the original discovery. We need not 
summon Morse, or Blanchard, or Woodworth, to prove that this is the 
usual history of every great discovery or invention. 

The present case adds another chapter to this long and uniform history. 
Every man who has made experiments with India Rubber, su phur, lead, or 
any other substance; who has heated them in a stove or furnace ; who has 
annoyed his family and his neighbors with sulphurous gas; who has set up 
a rubber factory and failed; who has made India Rubber goods that no one 


10 


JUDGE GRIEr’s OPINION. 


would buy, or, if bought, were returned as worthless; in fine, all who had 
ceased their experiments and endeavors, because they had not discovered 
that such qualities could be given to that substance, are now paraded forth 
as the inventors and discoverers of vulcanized India Rubber. It is but just 
to many of these persons to say, that they themselves have made no such 
claim. It has been now for the first time made for them by the defendant, 
who appears to have discovered at length that he himself was probably the 
inventor ; a fact which appears to have been unknown to him in 1846, when 
actions were first brought against him for pirating this discovery; a fact, 
also, which others are more ready to prove than himself to assert. Not¬ 
withstanding the indomitable energy and perseverance with which this 
attempt to invalidate the patent has been pursued, the volumes of testimony 
with which it is oppressed, and the great ability with which it has been 
canvassed in the argument, we are of opinion, that the defendant has most 
signally failed in the attempt to show that himself, or any other person, dis¬ 
covered and perfected the process of manufacturing vulcanized India Rubber 
before Charles Goodyear. 

The testimony about Collins, which has been most relied on in the argu¬ 
ment, contains much internal evidence of falsehood ; it proves too much, 
and too little ; it is felo cle se. Yet, assuming it to be true, it amounts to 
no more than this : that he had used the ingredients of sulphur, white lead, 
&c., in connection with the rubber; that he had heated them; that he may 
have had some partial success, which, if pursued with perseverance and 
judgment, might have resulted in the discovery of vulcanized rubber. He 
may possibly have been so near the discovery as to stumble over it. Yet 
he never went on to perfect his experiments. They were abandoned 
without a successful result. Every factory that employed him, and pur¬ 
chased his services or his secret, failed. No goods of “ vulcanized India 
Rubber” made by him, or in the factories that employed him, have sur¬ 
vived to prove his success. Time, which devours all things, may be pre¬ 
sumed not yet to have digested or destroyed all the vulcanized rubber sup¬ 
posed to have been made (if it ever had been made) by Collins and the 
various other pretenders. 

The sum of the evidence so industriously collected appears to be this, and 
this only. Others have made experiments : they have tried sulphur, white 
lead, and a high degree of heat, and have failed to perfect any valuable dis¬ 
covery. Goodyear has used these elements, and perfected a valuable art. 
They have failed : he has succeeded. 

IV. The objection that the patents to Goodyear are invalid, because both 
Hayward and himself had severally abandoned their discoveries to the pub¬ 
lic, is not sustained. 

The question of abandonment to the public must always depend, in a great 
measure, on the peculiar nature of the subject matter. The mere sale of a 
peculiar manufacture, which does not on its face disclose the nature of the 
compound, or the mode of producing it, is not such an abandonment. That 
India Rubber could be treated so as to have the qualities that it is now 
known to possess in its “ vulcanized” state, could not be discovered by any 
reasoning a priori . Those acquainted with the subject might conjecture, 
hope, or believe, that such a thing might be discovered. But the discovery 
must necessarily be empirical—the result of time, experiment, or chance ; 
of patient attention to phenomena exhibited, and results obtained. And 
when the fact of possibility is at length established, the best mode of obtain- 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


11 


ing the given result must be tested by frequent and patient experiment and 
observation. 

The compound or substance called “ vulcanized India Rubber” was of no 
actual value per se , but only as it could be made to enter into the manufac¬ 
ture of other articles, and communicate its peculiar qualities to them. How 
those articles would retain those qualities in use and command a market, 
could be tested only by time and experience. Neither Hayward nor Good¬ 
year would have been justified in shouting “ Eureka” and claiming a patent 
on the first appearance of success in their respective experiments. Good¬ 
year exhibited the substance discovered by him and some goods manufactur¬ 
ed with it in England in 1843. He sold some of the goods here. But he 
did not disclose to the public either there or here, the method of compound¬ 
ing his material or what constituted his real secret or discovery. An exhi¬ 
bition of the manufactured articles did not disclose it, except that from the 
smell it might be inferred that sulphur had been somehow used in its con¬ 
coction. Hancock, who obtained a patent in England for the same discovery, 
had seen Goodyear’s articles, and thus ascertained that such a material 
could be made, but not the mode of effecting it. His patent was held valid 
by the English courts, on the ground that, although Goodyear had first made 
the discovery in America, he had not abandoned it to the public by the sale of 
the manufactured articles ; and that the use of the manufacture was not the 
use of the invention, as the material itself did not disclose the means of 
making it; and that, therefore, Hancock was entitled to be considered an 
original inventor. 

It is true that discoverers might sometimes deal unfairly with the public, 
by enjoying their monopoly so long as their process remained secret, and 
seeking a patent only when it was in danger of discovery. How far such 
conduct might invalidate a patent will be decided when such a case arises. 
It is sufficient for the purposes of the present case, that we say, that the evi¬ 
dence does not show an abandonment of the processes patented to the pub¬ 
lic ; or that the patentees delayed longer to take out their patents than was 
justifiable under the peculiar circumstances of the case. 

Y. We now come to the objections which have been made to the re-issued 
or amended patent of 1849. 

1st. The first objection is, that the patents of 1844 and 1849 are not for the 
same invention. 

This objection is not founded on fact. Both the patents are for precisely 
the same invention or discovery. They both describe, in nearly the same 
words, the best mode of manufacturing India Rubber, by exposing it to a 
high degree of heat in connection with sulphur and white lead ; by which 
treatment the substance is endowed with new and valuable qualities which 
it did not possess before. The discovery is the same ; the mode of manufac¬ 
turing the compound is the same. 

The first patent had set forth the nature and extent of the invention de¬ 
fectively. There is no reason to doubt the bona fides and propriety of the 
re-issue. It is apparent on the face of the papers, even if the action of the 
commissioner on that point was not conclusive. 

2d. The objection “ that the description in the specification is obscure and 
insufficient,” is an assertion wholly unsupported by any testimony in the 
cause. 

3d. The objection “ that rubber and sulphur cannot be vulcanized in heat¬ 
ed atmosphere,” is not only irrelevant but unsupported by the evidence. 


12 judge grier’s opinion'. 

That some persons have not succeeded, while others have, is no proof of its 
impossibility. 

4th. The fourth objection is, “ that the latter patent claims more than was 
described in the original.” If the latter patent is for precisely the same in¬ 
vention, art, or discovery, as that described in the first, the objection that it 
claims more, is a mistake of fact. If the last patent differs from the first 
only in stating more clearly and definitely the real principles of the inven¬ 
tion, so that those who wish to pirate it may not be allowed to escape with 
impunity through the imperfection of the language used in the first, then has 
arisen one of the cases for which it was the intention of the act of Congress 
to provide, and the objection is worthless in point of law. 

5th. It is claimed also that the re-issued patent is void, because the things 
claimed in the original were in public use, in the interval between the issue 
of the original and the re-issue, and were therefore dedicated to the public, 
and cannot be resumed by the re-issue. 

This objection is founded on an assumption of law, which cannot be con¬ 
ceded. It assumes that the publication of a discovery or invention by a 
defective patent, is a dedication or abandonment of it to the public. If such 
be the case, the permission given by the act to re-issue a patent, on account 
of defects, is of little value, and a snare to inventors. The most skilful and 
ingenious inventor is seldom able to draw up a valid specification of his in¬ 
vention, and not many lawyers have sufficient experience and knowledge, 
both scientific and legal, to do it for him. The original patents for some of 
the most valuable modern inventions now known, have been afterwards dis¬ 
covered to be insufficient, and the patents have been renewed, with specifi¬ 
cations setting forth, not a different or improved machine, but the same ma¬ 
chine or invention, and a corrected statement of what is the true nature and 
extent of the patentee’s claim. Every specification or claim which correctly 
sets forth the true nature and full extent of an invention, may be said to be 
broader than the one which fails to do it. To decide that such a difference 
would vitiate the last patent, or that the original mistake had amounted to a 
dedication to the public of everything not correctly claimed in the specifica¬ 
tion, would leave the rights of inventors in a most precarious situation, and 
the right given to amend their patents a mere illusion. 

The original patent of Woodworth, issued in 1828, was most palpably de¬ 
fective and worthless. It was renewed in 1845, and the true nature and ex¬ 
tent of his claim correctly set forth. The court decided that the renewed 
patent was valid, because it was for the same invention; and that the ques¬ 
tion to be decided was not whether the last patent differed from the first in 
the extent of the claim or statement of the distinctive principle of the in¬ 
vention, provided it claimed nothing more than the same machine. The 
right to amend the description of the claim, so as to make the patent a valid 
grant of the real invention to its full and true extent, is what the law intend¬ 
ed to confer on the inventor. The mistake of claiming too little, in the 
original patent, has an equal claim to correction with that of claiming too 
much. 

The case lately decided at Philadelphia, about the machines for breaking 
and screening coal, has no application to the present. 

The renewed patent in that case was for a different machine from that des¬ 
cribed and claimed in the original; and the machine claimed and described 
in the last patent had been abandoned to the public for many years. But 
in this case the art of manufacturing vulcanized India Rubber, having cer- 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 13. 

tain qualities not before known, is all that is claimed in the renewed patent 
and the same art or discovery was described in the original. It included 
two several inventions, and its validity was on that account doubted (whe¬ 
ther correctly or not is immaterial); a separate renewal was a just and 
proper precaution, and one which the complainant had covenanted with the 
defendant to obtain. 

The amendments in the last, by setting forth the true extent, and distinc¬ 
tive principles of the invention, was a right vested in the patentee, and 
a wrong to no one, and more especially to the defendant in this case. 

In examining questions of identity or infringement, we should first ascer¬ 
tain wherein consists the substantial peculiarity which distinguishes the art 
or invention patented from all others. Whoever adopts, or appropriates 
such distinctive peculiarity or principle, without license of the patentee, ap¬ 
propriates the invention and infringes the patent, if its specifications be cor¬ 
rectly drawn. 

Goodyear’s invention or discovery did not consist merely in the use of 
sulphur or lead, or both; or the application of heat to rubber in connection 
with both, either or neither of them ; all these things had been done before, 
perhaps to little purpose. 

The essential and distinctive peculiarity of his discovery is, that by using 
a certain degree of heat in the treatment of rubber, in connection with those 
materials, it can be made to assume new and valuable qualities, distinguish¬ 
ing it from any other substance heretofore known. Whoever manu¬ 
factures this material, or imparts its peculiar qualities to manufactured 
goods, by taking advantage of the peculiar discovery of Goodyear, pirates 
it, whether the patent be sufficient or not. If the specification of the origi¬ 
nal patent was so ill drawn as to permit this to be done with impunity ; if 
it fully disclosed the art, or invention, but left the patent open to evasion or 
invasion, the property of the inventor may be compared to a field with an 
insufficient inclosure. Trespassers may take advantage of it, and defend 
themselves on the ground that the fence was not legal and sufficient, accord¬ 
ing to the statute ; but, though they may escape punishment by such a plea, 
they gained no right of entry, or property in the field. 

It is no justification of the infringement of a renewed patent, that the in¬ 
fringer had stolen and used the invention with impunity before the patent 
was amended. The inventor, it is true, may possibly not be able to recover 
damages for such use antecedent to the date of the renewed patent; but such 
previous use, though made with impunity, confers no right to the invention, 
or to future immunity for its infringement. The seventh section of the act 
of 3d March, 1839, ch. 88, protects those who “have purchased or con¬ 
structed a newly-invented machine, &c., prior to the application of the in¬ 
ventor or discoverer for a patent,” but confers no such privilege on those 
who may have seized upon an invention or discovery disclosed in a patent, 
whose specification may happen to be defective or insufficient. On the con¬ 
trary, the thirteenth section of the act of July, 1836, which regulates the re¬ 
issued patents, declares “ that the patent so re-issued, together with the cor¬ 
rected description and specification, shall have the same effect and operation 
in law as though the same had been originally filed in such corrected form 
before the issuing out of the original patent.” 

VI. After what has been said, but a few words will be necessary on the 
question of infringement. 

The answer does not contain a direct denial of the infringement of both of 


14 


JUDGE GRIER’S OPINION. 


the patents. The assertion that he “ has not used the compound in the pro¬ 
portions described in the patents, but has used other and better compound,” 
is evidently a mere evasion, or rather an admission that he has been attempt¬ 
ing to evade while actually infringing the patents, in disregard both of the 
law and his solemn contract. The allegation that he has purchased other 
patents may be true, but it is immaterial. If the other patents showed a 
better right to the inventions claimed by Goodyear’s patents, they were not 
given in evidence ; if they were for mere variations or improvements of the 
discovery patented by Goodyear, they were wholly irrelevant. 

There is another feature in the defence set up in this answer which the 
Court are compelled to notice. It claims a right to exercise all the privileges 
granted by the contract, while it repudiates its obligations. And, moreover, 
it seems not only to claim to exercise a license granted for using the patents 
in the manufacture of shirred goods, without paying the tarilf or compensa¬ 
tion, but also the right to violate the patents with impunity. As regards 
all other articles, the various covenants, amendments, and additions, signed 
and sealed by these parties, constitute, in fact, but one agreement. Though 
dated on different days, they are but consecutive portions of a long negotia¬ 
tion, never concluded till after the last instrument was signed. The cove¬ 
nant not to use the plaintiff’s patented discoveries in the manufacture of 
other articles than those for which he had a license, like a covenant not to 
rob him, maybe considered superfluous. Where law governs, the action of 
trespass, or case for a tort, will afford as ample a remedy as an action on a 
special covenant not to commit it. If the monopoly of using these patents 
in the manufacture of shirred goods, granted and warranted to Day by these 
articles, has been materially injured through any negligence or fraud of Good¬ 
year, Day will undoubtedly have a right to show such fact in evidence, and 
recoup the damage caused thereby, in any action, either at law or equity, de¬ 
manding the compensation or tariff agreed to be paid for the license or mo¬ 
nopoly. In the action heretofore prosecuted at law by the same parties on 
this agreement, Day did recoup or set off such damages against the demand 
for the tariff—in a case, too, where it was shown that Goodyear had acted in 
good faith, and had done all in his power to protect the monopoly of Day ; 
but the injury to Day was effected by the fraudulent conduct of others, 
whose acts neither Goodyear nor Day could control. All damage for breach 
of the covenants of this article, up to the date of the institution of that suit, 
must be considered as adjudicated in that suit. The allegation of the plea 
of the defendant in that case, that the injury to Day’s monopoly was done 
with the collusion of Goodyear, was treated as superfluous, and the jury in¬ 
structed to allow the set-off without evidence of collusion. The pleas entered 
in that case had evidently been intended to draw a demurrer, but issues hay¬ 
ing been taken on them, many of which were wholly irrelevant, it was thought 
better for the interests of both the parties to dispose of the merits without 
regard to the net of ill-drawn pleadings with which it was entangled. 

In the present case, the whole controversy between the parties, except so 
far as it has been previously litigated and decided, is presented, though 
somewhat informally, by the bill and answer. The latter sets forth the con¬ 
tract in hcec verba. Though the prayer of the bill does not demand an ac¬ 
count of tariff on shirred goods, the answer and proofs seem to have proceeded 
on the supposition that it did. We cannot permit the plaintiff to split up 
his claims against the defendant, that he may harrass the defendant with an¬ 
other triennium of litigation, in actions at law for past breaches of his covenants. 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


15 


The decree must be final on all causes of action between the parties up to 
its date, whether founded on the contract, or for infringement of the patents. 
The contract required the assent of two minds to make it, and the repudia¬ 
tion must be mutual in order to annul it. As the defendant has not suc¬ 
ceeded in showing the patents to be void, he can hardly be supposed to de¬ 
sire an abandonment of the contract, which would subject him to much 
greater damages. What would have been the consequence to him if the 
complainant, by amending his bill, had joined him in the rejection and de¬ 
struction of this agreement, we need not inquire. But this contract has been 
made after great deliberation, and as many acts have been done, and large 
sums of money paid in part performance of its stipulations; and not only 
so, but as it has been adjudged to be a binding and subsisting contract in 
suits at law where both parties have relied on its covenants, it cannot now 
be treated as a nullity, even though the plaintiff may now assert his readi¬ 
ness to join the defendant in its repudiation. The parties cannot be put in 
the same situation as if this agreement had never been made. And the Court 
will not, in a decree intended to put an end to litigation, attempt to undo what 
has been done, and set aside what has been already adjudicated between the 
parties. Such a course would cause great difficulty, and renew old disputes. 
’Interest reipublicce sit finis litium. The Court and the public have an interest 
in this matter, and the parties cannot be indulged, even if they were willing 
to indulge in a course so harrassing and injurious, if not ruinous to both. 

These articles of agreement were originally framed for the avowed pur¬ 
pose of putting an end to litigation, but by some fatality, or, perhaps, neces¬ 
sarily, (from the numerous and contradictory covenants of parties dealing 
with fear and distrust of each other,) they seem to have furnished fuel for 
a w T orse fire than that which they extinguished. If* the defendant has exer¬ 
cised the privilege, or enjoyed the license granted to him by the agreement, 
he should pay the consideration contracted for, and be compelled to perform 
the stipulations. The evidence shows that be has made large profits by this 
monopoly of shirred goods. He has, as yet, paid nothing for it. It is no 
bar to the account of these profits that some petty pirate may have manufac¬ 
tured some shirred goods, if it has not materially affected the profits of the 
defendant. If Goodyear, after notice that such infringements were com¬ 
mitted, has neglected to protect the defendant from such interference, the 
Master, in stating the account, will allow such damages as may be proved 
to be recouped from the amount of the tariff. 

The Court do, therefore, award an injunction, as prayed for in the bill, and 
refer the case to James S. Green, Esq., as Master, to take the accounts de¬ 
creed. 


16 


judge Dickerson’s oriNioN. 


IN CIRCUIT OF UNITED STATES, 

For the District of New-Jersey. 


Charles Goodyear, 


vs. 


Horace II. Day. 


In Equity. 


Dickerson, J.—In this case the bill charges that the complainant, since the 
year 1843, has been, and now is, the owner and proprietor of certain new 
and useful improvements in the preparation of India Rubber for manufactur¬ 
ing purposes, by which the properties of the India Rubber are greatly 
changed and improved, and the material itself rendered insensible to heat 
and cold within certain degrees of temperature: 

That those improvements have been secured to him by Letters Patent, 
one of which was granted to the complainant upon the first discovery and 
invention of one Nathaniel Hayward, and purchased by the complainant, 
which letters bear date Feb. 24, 1839 : 

That in 1840, he was engaged in experimenting upon India Rubber, and 
discovered that a high degree of heat, in connection with sulphur and other 
substances, might be attended with beneficial effects. After much difficulty 
and many experiments, in the latter part of the year 1843, he ascertained 
that most beneficial results might be obtained by compounding India Rub¬ 
ber with sulphur and the carbonate of lead, or its oxides, or other substan¬ 
ces having a metallic base: 

That he applied for and obtained a patent for that invention or discovery, 
dated June 15, 1844 : 

That by accident or mistake, and not by fraud, the improvements were 
not properly described or specified according to the invention and improve¬ 
ments as made: 

That he surrendered that patent and obtained a corrected one, dated Dec. 
25, 1849: 

That, about the time he obtained the patent of 1844, he sold to one 
David L. Suydam, the right to use said improvements in the manufacture 
of shirred goods for suspenders, or other purposes, for the consideration of 
$15,000: " 

That Suydam commenced the manufacture of said goods, when the de¬ 
fendant Day also commenced manufacturing the same goods in violation of 
the complainant’s right, and so much to the injury of Suydam that he gave 
up and surrendered his purchase—which surrender the complainant ac¬ 
cepted : 

That the defendant Day still continued to infringe the rights of the com¬ 
plainant as secured by said patent; by reason whereof he prosecuted the 
said Day, and his agents, in different places, for violating the same: 





CHARLES GOOD! EAR AGAINST HORACE II. DAY. 


17 


That complainant was prepared to try said causes, or some of them, at the 
Circuit Court United States, for the southern district of New-York, at the 
November Term, 1S46: 

That shortly before that Term, the defendant Day applied to settle those 
causes, and proposed:—To acknowledge the validity of his patent; to pay 
complainant $5,000 for damages and settlement of said suit; to take a 
license for the sole manufacture of shirred goods, and to pay three cents a 
yard to the complainant for every yard of shirred goods made under the 
same ; and to consider all shirred goods made by him, as made under 
those patents; to stamp all such goods with complainant’s name as paten¬ 
tee ; and to keep and render regular accounts of all shirred goods made by 
him, and not to infringe said patents: 

That complainant accepted said proposition, and agreed to discontinue his 
suits; and to take judgment on one of them, and enter satisfaction of the 
same without costs; and to accept the $5,000, and relinquish his claim for 
damages on the defendentand his agents in said suits : 

That the said suits were accordingly discontinued, except one, upon which 
judgment was entered and satisfied as agreed upon : 

That the said sum of $5,000 was paid by Day, and all claim for damages 
relinquished by complainant: 

That Day acknowledged said patents to be valid, and accepted said 
license to make shirred goods, and agreed to pay the said tariff of three 
cents a yard, and to abstain from all infringements of said patents, and to 
confine himself to the manufacture of shirred goods and some other articles 
mentioned in said agreement: 

That Day, notwithstanding said agreement, violated the said patents, and 
continues to do so. 

Prayer. —“ That defendant may render his account of the articles he has 
made of India Rubber, or of which India Rubber is a component part, pre¬ 
pared by the use of the improvements, or either of them specified in said 
patents, or either of them, or made after the manner of either of said im¬ 
provements specified in either of said patents, &c., except such articles as 
he is entitled to make under said agreement,” &c. 

And also a writ of injunction to restrain defendant, Day, from further in¬ 
fringement of the patents of complainant, and to prevent him from use of 
the improvements for the manufacture of any articles, except those allowed 
by said agreement. 

The defendant in his answer admits the several patents, as set out in the 
bill, but denies that the complainant was the original inventor of the im¬ 
provements claimed by him ; and also denies the validity of either of the 
patents. But he admits the execution of the agreement mentioned in the 
complainant’s bill, and sets out the same with all the covenants at length. 
And in this view of the case it is proper to inquire whether the complainant 
has made a case which entitles him to any relief, and for that purpose to 
examine carefully that agreement, and consider its effects ; and it is proper 
to remark that upon this part of the case there is no serious dispute as to 
facts. 

But the defendant, in his answer, alleges by w\ay of plea, that the com¬ 
plainant had granted portions of his said patents to William Judson, James 
A. Dorr, and John Haskins, and that they should have been made parties 
to this suit. In answer to that, it is sufficient in this place to say, that it is 
not pretended that he has granted away all of his interest in'said patents, 

2 


18 


judge Dickerson’s opinion. 


and therefore, at least as to one branch of the relief prayed, to wit, the in¬ 
junction, he is entitled to sue alone; and the question therefore is not, 
whether proper parties have come into Court, but whether the party com¬ 
plainant is entitled to the relief asked, or either branch of it. 

The contract made by the parties consists of a variety of covenants, and 
the first part of it is dated the 29th of October, 1846; and recites that 
Charles Goodyear, the complainant, at the time of the contract, “ has, owns, 
and controls all and every right and privilege, granted or intended to be 
granted to him, the said Charles Goodyear, by the several Letters Patent is¬ 
sued to him,” except a certain license to Hutchinson & Runyon, one to Ford 
& Co., both dated August 12, 1845, and one to Onderdonk & Letson, dated 
Sept., 1845. It also recites that the said Goodyear and his assigns had in¬ 
stituted various suits at law and in equity against the defendant, Day, and his 
agents, for alleged violations of the said rights; and that they had resolved 
to settle all differences between them. 

Therefore it was agreed as follows : “ That the said Charles Goodyear, in 
consideration of the sum of $10,000 paid by Day, and of further covenants 
on the part of Day, hath granted, bargained, sold, assigned, transferred, and 
set over, and doth hereby grant, bargain, sell, assign, transfer, and set over 
to the said Horace II. Day, his executors, administrators and assigns : 

1st. The exclusive right to make, use, and sell shirred goods ; to use his 
machinery and improvements for that purpose, during the terms specified in 
said patents; also to use the same for the manufacture of India Rubber hose, 
beds, &c. 

2d. That complainant will re-purchase, and cancel, all licenses, &c., (ex¬ 
cept the three above named,) touching or affecting the rights conveyed to 
Day, and until such re-purchasing and canceling, the covenants of Day not 
to be binding. 

3d. That Goodyear will not grant other rights to manufacture shirred 
goods, and in case of violation of this article, the covenants of Day not to be 
binding. 

4th. Goodyear to prosecute for violations of rights sold to Day, and carry 
suits to judgment, &c. 

5th. That Day shall have the right to use all the improvements made, or 
to be made by Goodyear, to manufacture shirred goods, &c. ; machinery, &c. 

6th. That Goodyear shall immediately discontinue all suits, each paying 
his own costs, and that he will and hereby does release and discharge the 
said Horace H. Day, &c., from all damages, actions and causes of action for 
any violations, or alleged violations, of any or all of the said patents above 
enumerated or referred to, and indemnify and save harmless the said Day 
from any damages on account of any claim set up under said Goodyear. 
And the said H. H. Day in consideration of the premises agreed : 

1st. That he would pay to Goodyear a tariff of three cents a yard for the 
shirred goods to be made by him. 

2d. That he would keep accounts and books of all such goods made by 

him. 

3d. That he would pay the tariff quarterly from the 1st January then 
next, 1847. 

4th. That he would mark the goods with the name of Goodyear as 
patentee. 

5th. That he, Day, would not assign this right without the assent of Wil¬ 
liam Judson. 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


19 


Thirdly: It was mutually agreed, that if any person manufactured shir¬ 
red goods, “ thereby materially impairing the profits of said Day in the ex¬ 
clusive enjoyment,” drc., or if either of said patents should be declared void 
by a competent Court, “ that then the tariff or assessment above provided 
for should cease,” anything therein before contained to the contrary not¬ 
withstanding, “ and the settlement of the claims consequent upon the case 
first above named, should be referred to arbitration, drc. But it was, never¬ 
theless, fully understood and agreed, that the suspension of the tariff or as¬ 
sessment aforesaid, if arising from the cause first above provided for, should 
subsist only during the continuance of the injurious competition aforesaid.” 
By an additional article on the same day, it was agreed that Goodyear might, 
when he deemed it right and proper, surrender the patents of 1839 and 1844, 
or either of them, and take them out anew, but such new Patent or Patents 
to be subject to all the foregoing covenants. 

By additional or supplemental articles, dated 5th Nov., 1846, it was 
agreed : 

1st. That the original articles should be construed and governed by 
“ those of Nov. 5,” in all particulars wherein they differ or are inconsistent 
with these, but in all other respects to remain in full force and virtue. 

2d. That the article requiring assent of Wm. Judson to enable Day to 
assign be canceled. 

3d. Day covenants “ that while Goodyear protects him, the said Day, in 
his exclusive right to manufacture shirred or corrugated goods, he, the said 
Day, will not manufacture any other articles of metallic rubber, or such as is 
compounded of rubber and sulphur, white lead, or its oxide, or any such, as 
it is necessary to complete and finish by the aid of artificial heat, or sulphur, 
except for experiment, drc. 

4th. Goodyear covenants that he will procure and cause to be assigned to 
Day, to be canceled, the three licenses, to Hutchinson dr Runyon, to Pord 
dr Co., and to Onderdonk dr Letson ; which reassignment shall be a condi¬ 
tion precedent to the performance of any part of this contract by said Day. 

5th. Day agrees that the license granted him to use machinery patented 
to Goodyear be vacated, drc. By another agreement of same date, it is 
provided— 

1st. Plutchinson and New-Jersey Rubber Co. to bind themselves not to 
manufacture any shirred goods after a certain time to be fixed. 

2d. Ford dr Letson to do the like. 

3d. That all suits upon the subject be discontinued, each party paying his 
own costs, except (if deemed advisable by the counsel of the parties), 
judgments may be taken in the suits vs. Myer and Sevier and Knowlton, 
on condition that satisfaction be entered, each party paying his own costs. 

4th. That a release from the Naugatuck Company of the right to make any 
articles which Day is licensed to make, be obtained and assigned to Day at 
the time of executing these articles. 

5th. That the goods attached in Boston be delivered up to Day free of 
charge. 

6th. All newspaper articles be submitted to counsel before publication, 
dr c. 

7th. All remaining questions, such as the period when present manufac¬ 
turers shall stop making shirred goods, drc., to be submitted to arbitration, 
if parties cannot agree. 

These several covenants were not delivered and exchanged until about the 


20 


judge Dickerson’s opinion. 

5tli day of December, 184G, when all the preliminary matters therein con¬ 
templated had been adjusted, when they were duly executed, under the 
hands and seals of the respective parties, and delivered; and it is impor¬ 
tant to inquire as to the rights, duties and obligations of the parties at that 
time. These several covenants are to be taken together as one entire con¬ 
tract ; and it is manifestly a contract partly executed and partly executory. 
Goodyear had executed his part of the contract by assigning to Day all the 
rights contemplated in the contract in that respect. 

He had withdrawn all suits against Day and his agent; and released all 
claim for damages according to the terms of the contract. lie had called in 
and canceled all outstanding licenses, according to the requirements of the 
contract. 

lie had caused the goods of Day, which were attached in Boston, to be 
delivered to him without charge. On the part of Day, he had admitted that 
Goodyear had owned and controlled all and every right and privilege grant¬ 
ed, or intended to be granted to him by the said several Letters Patent. 

He had established the validity of those patents upon record by consent¬ 
ing that a verdict should be taken and judgment entered thereon for that 
purpose, and he had paid to Goodyear the consideration of $5,000. What 
part of the contract yet remained to be executed 1 Nothing material on the 
part of Goodyear, but that he should protect Day in the exercise of the right 
granted him to manufacture shirred goods, &c.; and on the part of Day, that 
he should pay the tariff of three cents a yard, keep accounts, and mark the 
goods, as made under Goodyear’s patents. 

If at that time, and after the execution and delivery of that contract, 
Goodyear had in fact fully protected Day, and he had notwithstanding gone 
on to infringe the rights of Goodyear as secured by said Letters Patent, he 
would undoubtedly have been restrained by injunction under a bill filed by 
Goodyear for that purpose, and that without the intervention of a jury ; and 
if at that time, and under those circumstances, he would have been restrain¬ 
ed, why should he not be restrained at this time under existing circumstan¬ 
ces ? It may be true, as alleged in the answer, that Goodyear did not pro¬ 
tect Day, as by the contract he had agreed to do. But the only consequence 
of such failure is to relieve the defendant (Day) from the payment of the 
three cent tariff, and not to authorize him to repudiate the contract itself, 
which provides that the suspension of the tariff, if caused by injurious com¬ 
petition for want of protection, “shall subsist only during the continuance of 
the injurious competition. It seems hardly necessary to advert to the ex¬ 
traordinary claim of the defendant in his answer of a right to repudiate this 
contract by virtue of the 3d covenant of the article, dated Nov. 5, 1846, 
which provides that while Goodyear protects Day in the right granted him, 
he, the said Day, will not manufacture any other articles, &c. This article 
is manifestly made in favor of Goodyear, and its only effect is to give him 
an action of covenant, in addition to his other remedies against Day, for an 
infringement of his patents. 

The counsel of the defendant (Day) deny that those articles of agreement 
should be so construed as to prevent Day from denying the validity of the 
patent of Goodyear, and contend that the Court should not inquire into this 
matter of alleged estoppel, because it cannot be passed on but by the aid of 
a jury. In answer to this objection it is sufficient to remark, that in this 
view of the case there is no disputed fact upon which a jury could act. 

They contend, in the next place, that the construction of the complainant’s 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


21 


bill is such that he cannot deprive the defendant of a trial at the law by 
means of the special equities; that the hill should have stated the settle¬ 
ment in all its terms, and averred performance of all conditions, &c.; and 
that the hill should have been so framed as to give the defendant an oppor¬ 
tunity to answer on his oath, deny the special equity, &c. 

By reference to the bill in this respect, it appears that the complainant 
has set out all the material parts of the covenant, and averred the execution 
and performance of the same; and the defendant admits the truth of the 
bill in this respect, and sets out the covenants at large; and I cannot con¬ 
ceive how the defendant can complain that they had no opportunity in their 
answer to deny the special equity arising under those covenants ; for, if that 
equity arises at all, it is upon the facts charged in the bill, and admitted in 
the answer. The defendant further objects that this bill does not bring this 
settlement before the court, by such averments as are requisite in order to 
obtain specific performance. 

This may be true, and the reason why the bill does not contain such 
averments is, that it is not a bill for specific performance ; but it is founded 
upon the letters patent, and the ground of relief is the infringement by the 
defendant of those letters; and this agreement is charged in the bill as a 
fact, which, in a Court of Equity, should estop the defendant (Day) from 
denying the validity of the complainant’s title ; and that is the question now 
to be considered. Upon this point I think there can be no reasonable 
doubt, either upon principle or authority. I know of no principle of equity 
or fair dealing which would justify the defendant in denying at this time 
the validity of the complainant’s patents, when by these settlements he had 
induced him to discontinue his suits; to release his claims for damages for 
former infringements ; to call in and cancel all licenses before granted; and to 
surrender the goods of the defendant which he had attached at Boston. Nor 
do I know of any authority by which the court would be justified in per¬ 
mitting him to make such denial. 

This is not the case of a mere license, but of a license connected with 
important agreements on the part of the complainant, already executed, 
and it is a case where the defendant has in fact, and under his seal, admitted 
the validity of the patents; and for the very purpose of estopping himself 
from denying their validity, he has consented to a verdict of a jury against 
him, which now stands of record to establish it. I am therefore of opinion 
that the defendant could not be permitted to deny the validity of the com¬ 
plainant’s patents, and that he is entitled to an injunction according to the 
prayer of his bill. And under the circumstances of the case complainant 
is also entitled to an account, unless a good objection from that branch of 
the relief arises from the want of proper parties. 

The defendant in his answer sets up, by way of plea, that the complain¬ 
ant had made certain assignments of interest in his patents to James A. 
Dorr, John Haskins and William Judson, and that they should have been 
made parties to the bill. This involves the necessity of inquiring into the 
nature of those assignments. Upon inspection, it appears that the agree¬ 
ment with Haskins is a mere license, and therefore furnishes no foundation 
for the objection. The assignment to William Judson would appear in the 
first part of it to convey a present interest, but in the latter part of it, it is 
“ distinctly understood ” that Mr. Goodyear had not conveyed, and did not 
convey, to said Judson, or his representatives, any right of sale or disposition 
of said inventions or patent rights, and that the said William Judson should 


22 judge Dickerson’s opinion. 

not be entitled to collect or enforce the payment of said interest until the de¬ 
cision of the court, on motion for injunction, or by verdict of a jury, which 
reduces the assignment to Judson to a mere covenant on the part of Good¬ 
year, that upon a certain event (which has not yet taken place) he (Judson) 
shall have a certain interest in the improvements and patent rights, and of 
course it was not necessary to make him a party. The assignment to Dorr, 
was one sui generis , but it is similar to that of Judson’s in its conclusion, 
in which it is provided virtually that the said Goodyear had not conveyed, 
and did not convey, by anything in said assignment contained, to the said 
Dorr, or his representatives, “any right of sale , disposition , or control, of 
said inventions, patent rights and property, mentioned in said assignment, 
until there should be $75,000 credited to Dorr, according to the terms of 
said agreement,” which event does not appear to have taken place ; where¬ 
fore it amounts to nothing more than a covenant that Dorr should have a 
right to the control of said patent rights upon a contingency, which has not 
yet occurred. I therefore can see no good reasons why the complainant is 
not entitled to his account, according to the prayer of his bill. 

But as this view of the case applies to the present defendant only and 
those holding under him, it is proper to inquire whether the complainant is 
entitled to his relief generally, and without reference to these particular con¬ 
tracts. Before entering upon that important branch of the subject, I advert 
to one objection, which it appears right to notice at this place. In the 2d 
point made by the defendant in his brief he claims, “ That the complain¬ 
ant has no right to maintain this suit, because prior to its commencement 
he had bargained and sold, transferred and assigned his interest in the 
avails of any damages to be recovered against infringers of his patents, to 
others.” And to sustain the objection, he refers to an agreement made by 
the complainant with L. Candee and others, marked Exhibit C; upon the 
examination of which agreement, it appears to be a license from Goodyear 
to Candee and others, to use his improvements and patents, for the purpose 
only of manufacturing boots and shoes, with a covenant added that Candee 
and his associates should do all that might be proper and necessary to sus¬ 
tain said patents and defend the same against piracies and infringements; 
to be done at their expense, and that they were to pay the costs and to have 
the avails of all suits which they might commence in the name of the com¬ 
plainant or otherwise; and liberty was given to use his name in all cases 
where it might be deemed proper or necessary by counsel. The defendant 
seems to think, that by these covenants Candee and his associates are bound 
to defend the patents of Goodyear against piracies in all cases, and to pay 
the costs and to have the avails of all suits which might be commenced for 
damages for infringements of any of the patents of the complainant, when, 
according to the correct construction of these covenants, they must be limit¬ 
ed in their operation to the subject matter of the license, that is to say, 
to infringement of their exclusive privilege of using these improve¬ 
ments in making boots and shoes ; and although this agreement may possi¬ 
bly furnish a good reason wdiy, in the order for account, this particular 
branch should be excepted, I can see no reason why it should defeat the ac¬ 
tion. We now inquire whether the complainant, Goodyear, is entitled to 
the relief wdiich he seeks, without reference to these covenants with the de¬ 
fendant; and the first objection taken by the defendant is, that the complain¬ 
ant has not established his right at law. 

Much ingenuity has been displayed by counsel upon this point. But af- 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


23 


ter all that can he said upon the subject, it is reduced to this general propo¬ 
sition, that Courts of Equity have the right which generally should be exer¬ 
cised, of invoking the aid of a jury to settle disputed facts, but to be exer¬ 
cised at the discretion of the court; and of course the propriety of adopting 
such course must depend upon the circumstances of each particular case. The 
view 1 take makes it unnecessary to examine the question as applicable to 
this case, it having already been settled by a verdict of a jury, and it cannot 
be considered necessary to anticipate what might be a proper course to be 
adopted in this respect, upon any future case which might arise. 

Ihe. question recurs, whether Goodyear, the complainant, is entitled to 
the relief which he asks without reference to these covenants with Day, the 
defendant; and the first inquiry in order relates to the patent of 1839, is¬ 
sued to the complainant upon the invention of N. Hayward. 

Ihe originality of that invention is not denied in the answer ; but it is al¬ 
leged, that “ifHayward ever had any right to a patent for the com- 
“ position of sulphur and rubber, the same was abandoned and given up to 
“ the public by his, and by others, with his knowledge, using and selling it 
“ before his application for a patent.” 

.In order to understand the bearing of the law and the evidence of upon 
this point, it is necessary to examine and ascertain what Goodyear claimed 
as the invention of Hayward. He claims as his invention, and desires to 
secure by Letters Patent, “ the combining of Sulphur with Gum Elastic, 
“ either in solution or substance, either in the mode pointed out (in his spe- 
“ cification) or in any other which is substantially the same, and which will 
“ produce a like effect.” And the patent was issued on the 24th day of Feb¬ 
ruary, A. D., 1839. Upon examining the testimony on this point, there 
appears very little if any contrariety. Hayward was engaged in the spring 
of 1836, in the manufacture of India Rubber for “the Eagle India Rubber 
Co. at Woburn,” in the character of superintendent of the manufacture and 
compounding part. It appears by the testimony of Hayward himself, as 
well as by the witnesses of defendant, that he was experimenting during 
1836, 1837, and 1838, in the manufacture of India Rubber Goods, by the aid 
of sulphur and other materials ; and that goods were manufactured and sold 
to a small amount. But it does not appear by the testimony of any witness 
that any goods were manufactured during that period in the manner describ¬ 
ed in the patent of 1839. Wm. S. Humphrey, the principal witness on the 
part of the defendant, in that respect, speaking of the materials used by 
Hayward in 1836 and 1837, says, they were India Rubber, lampblack, and 
spirits of turpentine ; also sulphur and white lead were used ; and as to the 
proportions, he says, “ I do not think the proportions were ever definitely 
fixed. I do not know any definite proportion used at the time ;” and when 
asked what proportion of all the goods made by that company during the 
years 1836-7, were prepared by the use of sulphur in some form in the rub¬ 
ber compound, he answers, “ that he cannot state the proportion, and that he 
did not feel prepared to give any definite answer.” Most of all of the other 
witnesses referred to by the defendant, merely go to prove the undisputed 
fact, that he used sulphur in the manufacture of some of his goods. 

The facts as to this point are and appear by all the evidence to be, that 
Hayward, being impressed with the importance of sulphur in the manufacture 
of India Rubber goods, continued a series of experiments at Woburn, from 
the spring of 1836, until the company prohibited the use of sulphur as in¬ 
jurious to their goods, and failed in business. Hayward afterward went on 


24 


judge Dickerson’s oriNiON. 


with his experiments, and in 1839 brought it to such perfection, as to justify 
the taking out of a patent, which was done by Goodyear, as purchaser of 
Hayward’s rights. 

It is not necessary to examine particularly the law upon this subject, as 
the facts do not sustain the objection under any view of the law. The next 
subject in order of inquiry is the patent of 1849, for an improvement in the 
manufacture of rubber, by which is produced the article now technically de¬ 
nominated “Vulcanized Rubber.” It is a fact of great importance to the 
public that such an improvement has been made; and it is also a fact that 
the complainant, Goodyear, has obtained a patent for that improvement, 
which prima facie establishes his right. In answer to this claim of the com¬ 
plainant, the defendant, in the first place, denies that Goodyear was the origi¬ 
nal inventor, and then endeavors to establish the truth of his denial by the 
testimony of witnesses, the first and most important of whom is Richard 
Collins, whose testimony, from its extraordinary character, requires careful 
consideration. 

He swears that, in September, 1833, at Baltimore, he made a “ Rubber 
Compound, consisting of sulphur, lead, lampblack, turpentine, and magnesia, 
mixed with rubber,” and that he submitted it to a heat of from “ 200° to 
250° for the space of twelve hours.” And as to the proportions, he says : 
“ I did not know at first how much it would take; but after I had made my 
composition, I found it took about the proportions of three pounds of rubber, 
one pound of dry white-lead, nearly half a pound of sulphur. I did not 
weigh the ingredients; I judged from the portion that was left; I used con¬ 
siderable magnesia in consequence of using more turpentine than was neces¬ 
sary, not knowing how much it did require.” 

He left Baltimore, and was in Boston from October, 1833, to March, 1834, 
when he went to Lowell, and remained there until December, 1834 ; when 
he went to Newton, and remained there until March, 1835 ; when he went 
to Boston, and continued there until April, 183G ; when he went to Salem, 
and left there in January, 1837; and afterward went to Lowell, and staid 
till 1841. In these several places he was engaged in different India-Rubber 
establishments, and used this compound which he had discovered at Balti¬ 
more, but kept it secret, except to his brother and some one or two others ; 
and he swears as follows: “ I have tried no experiments only what I tried 
at Baltimore in 1833. The process I have tried in several places since, and 
have found the cloth covered with the composition was good, and there was 
no occasion to alter the compound nor the proportions.” And further, he 
says : “The first time 1 made composition consisting of sulphur, dry white- 
lead, magnesia, lampblack, India-Rubber, etherial spirits of turpentine, that 
was the first time I ever tried it, or heard of its being used. Finding the first 
composition made by me at Baltimore was right, I have not altered it since.” 
And finally, upon being requested to explain why he used, or directed to be 
used, his composition at the several places after leaving Baltimore, and whe¬ 
ther it was to ascertain anything about the goods made of that composition, 
he answers : “ It was not to ascertain anything about the goods. I have al¬ 
ways intended, if opportunity offered me a good chance to take the charge 
of manufacturing India-Rubber goods, I should do so; and, knowing the 
composition being better than any I had ever seen or used, I was in hopes to 
be benefited by it, and shall hereafter, if opportunity offers.” And this 
sworn on the 23d of July, 1851. 

If this testimony be considered upon the hypothesis that Collins, in his 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


25 


Baltimore experiment, produced the article now known as Vulcanized Rub¬ 
ber, it is incredible for several reasons. In the first place, it cannot be be¬ 
lieved that a young man, without any previous knowledge of the India-Rub¬ 
ber business, without ever having used, or heard of the use, of the different 
articles necessary to produce that material, should have discovered, at the 
first effort, those several articles, with the proportions of each, and the degree 
of heat necessary to produce the desired result. And it is equally incredible 
that, he having made so important an improvement, should not have availed 
himself of the benefit of that improvement during the twelve or fourteen 
years that he was engaged in the different rubber establishments in Boston, 
Lowell, Salem, &c., where every exertion was making to improve the manu¬ 
facture of rubber. 

But if all that he swears be taken as true, it does not disturb t-he right of 
the complajnant. It is undoubtedly true that many persons about that time 
were experimenting upon rubber, striving to do away with the objections 
and difficulties in its use, and they may have used the same materials in ex¬ 
perimenting, and applied different degrees of heat; but it matters not how 
near they may have come unless they have arrived at the particular result; 
and it is fortunate for the complainant in this case that such result is known 
by a chemical change in the material, rendering it insensible to the operation 
of heat and cold, and so distinct and marked as not to be mistaken. 

Now, it does not appear from the testimony of Collins, that he ever did 
produce vulcanized rubber. In no part of his testimony does he say that 
the effect of the Baltimore experiment was to render the rubber insensible 
to the effect of heat and cold, Ilis description of the heat to which his com¬ 
position was exposed, is vague and uncertain. He estimates it at from 200° 
to 250° ; and when it is considered that the experiment was made in his 
sleeping apartment, a room from 12 to 14 feet square, in a cylinder placed 
in the oven of a large stove, heated by wood, and continued for 24 hours, it 
is not surprising that (in the absence of a thermometer) he should have 
made a high and mistaken estimate of the degree of heat. For it is quite 
manifest that if he had kept the stove heated to the highest degree estima¬ 
ted, it would have produced upon his own body, the very effect that was de¬ 
sired to be produced upon the rubber—rendering it insensible to the effects 
of heat and cold. It is proper to remark that in the further part of his tes¬ 
timony, describing the several times and places in which he had used this 
Baltimore improvement, he never states the degree of heat to which the com¬ 
pound was exposed; and the several witnesses, John Collins, Rufus 
F. Newhall, Leander M. Earle and Leonard Shattuck, who severally swear 
that they have used this improvement under the direction of Richard Col¬ 
lins —none of them stated that a high degree of heat was used. On the con¬ 
trary, Earle swears as to the degree of heat—that he used a “ moderate de¬ 
gree of heat at first and then pretty warm, quite warm and being asked 
for what purpose the heat was used, he answers, “ for drying the composi¬ 
tion.” 

The defendant also insists, that Elisha Pratt vulcanized India Rubber 
previous to the patent of the complainant, that is, previous to the 15th day 
of June, 1844. For in the investigation of this subject, the patent of 1849 
must be considered as bearing the same date with the patent which was 
surrendered. 

In answer to this claim it is sufficient to remark, that his vulcanizing pro¬ 
cess was carried on in a small room, where the hats to be vulcanized were 


20 


judge Dickerson’s opinion. 


hung up and the room heated hy a stove ; and that he went into this room 
when heated, for the purpose of examining the hats, and being asked how 
long he would stay in the room, he answers, “ 1 should state from 10 to 15 
minutes. J had to be very expeditious about my business there. It 
was very hot, and required to keep the heat in.” When we consider that 
water boils at a temperature of 212 degress, it is quite manifest that this also 
was a mere drying, and not a vulcanizing process. The defendant further 
insists, that Goodyear, the complainant, did not invent the vulcanizing pro¬ 
cess ; but that the knowledge thereof was communicated to him by others, 
■who invented it, and he names John F. Nash and William Beers, as the two 
persons who made the invention and communicated it to him ; and of course 
that Nash and Beers, or one of them, should have had the patent. 

Upon examining the testimony, it appears that these two men, with 
others, were in the employment under pay of Goodyear, making experiments 
under his directions; and by their experiments they might, and probably did, 
aid in obtaining the final result. 

But it by no means follows that Goodyear, under whose direction these 
improvements were made, should be deprived of the credit or benefit of h e 
improvement. 

The defendant also insists, and in his answer he swears, that “ prior to the 
application of the complainant for his patent, and more than two years be¬ 
fore such application, he used, and had in practical use and operation in his 
business in the state of New-Jersey, the thing, invention, or discovery, or 
every substantial, useful and material part thereof which is claimed by said 
Goodyear in his letters patent of 1849.” That is to say, he swears that he 
made vulcanized rubber as early as June 15, 1842. 

This is not confirmed by any witness on the part of the defendant; but 
it is quite manifest from the letter of the defendant himself, explained and 
confirmed by the testimony of Horace Cutler, that until after December, 
1842, he, the defendant, did not understand the process of vulcanizing rub¬ 
ber ; and that he then obtained the information from said Cutler, who had 
it from the complainant. 

The defendant also charges that both N. Hayward and Mr. Hancock, of 
England, made this improvement prior to the complainant. But, unfortu¬ 
nately for the argument, these gentlemen both accord to Mr. Goodyear the 
merit of this invention, and no man for himself claims the merits of the in¬ 
vention, and no man denies that Mr. Goodyear is entitled to that merit, ex¬ 
cept the defendant in this case. 

But the defendant raises an objection, which, if well founded, renders it 
very immaterial who was the original inventor. For he insists, that if even 
the patent of 1844 was a good and valid patent, yet the re-issued patent of 
1849 is void for certain reasons which render it necessary to examine the 
law upon that subject. 

The 13th Section of Statute of July 4, 1836, provides that if a patent 
“shall be inoperative or invalid by reason of a defective or insufficient des¬ 
cription or specification, or by reason of the patentee claiming in his specifi¬ 
cation as his invention, more than he had, or shall have a right to claim as 
new,” the patentee is authorized to surrender the patent, and the com¬ 
missioner to issue a new patent, with a corrected description or specification, 
provided the error has arisen “ by inadvertence, accident or mistake, and 
without any fraudulent or deceptive intention.” 

This section contemplates two classes of cases. First, where a patent 


CHARLES GOODYEAR AGAINST HORACE H. DAY. 


27 


shall be inoperative or invalid by reason of a defective or insufficient descrip¬ 
tion or specification. And secondly, where that objection arises “ By rea¬ 
son of the Patentee claiming in his specification, as his own invention, more 
than he had or shall have a right to claim as new.” 

As to the first case, it is manifest that although the description or specifi¬ 
cation in a patent, be clear and distinct to describe some improvement or 
invention, yet if it do not describe the particular invention intended to be 
described, it is inoperative, or invalid, according to the sense of the law, and 
will justify a surrender, and re-issue; but before the re-issue is made the ap¬ 
plicant must satisfy the Commissioner that the corrected description is a true 
description of the thing invented. This case had the adjudication of the 
Commissioner upon the subject, and in the absence of all evidence or pre¬ 
text of fraud or deception, I am not disposed, even if we had the power, to 
disturb his adjudication. The applicant for the re-issuing of a patent is not 
bound to describe or claim all that he described and claimed in his original 
patent; but he may not describe or claim any new, or other improvement. 
In this case it is not necessary to inquire particularly as to the different kinds 
of evidence, which may be used before the Commissioner, or the Court, to 
establish the fact, that the applicant has a case which brings him within the 
purview of the act; for the letter of Goodyear to Dr. Jones, of the 13th 
December, 1844, clearly establishes the fact, that the description of a part 
of his original invention was omitted in the specification of 1844, by 
inadvertency, accident or mistake ; and, therefore, that he was entitled to a 
re-issue. And the only important question remaining is whether, in his re¬ 
issued patent of 1849, he has described and claimed an improvement differ¬ 
ent from, and more extensive than his original invention. It is not pretend¬ 
ed that the improvement described in the patent of 1849, is different in re¬ 
sult from that described in the patent of 1844. Both of them are for mak¬ 
ing vulcanized rubber; but the objection to the patent of 1849 appears to 
be, that it embraces a different and more extensive use of heat to produce 
the result, than the patent of 1844. In the specification of 1844, the appli¬ 
cant says : “ but I prefer to expose them to an atmosphere of artificial heat 
of the proper temperature.” Now, as that temperature is at least as high 
as 212°, it must have been an artificial heat; and the word prefer, which he 
uses in both specifications, as applicable to the particular manner and form 
of applying the heat, implies that there was some other form that he might 
use; but that he regarded this particular manner and form more than another, 
and the expression in the specification of 1849, that “the operator may 
communicate the heat in any suitable manner or form,” refers to the man¬ 
ner or form of applying the heat, and not to the kind or quality of the heat; 
and the only legitimate and proper use of that expression is to exclude the 
conclusion that the operator might be limited to the particular form or 
manner therein specified and described. The objection, therefore, does not 
apply to this part of the specification, nor do I think it applies to the latter 
part or claim made by the complainant in his specification of 1849. In the 
specification of 1S44, he describes the exposure to heat generally, limiting 
that heat to about 270°; and in his claim he speaks of exposure to a “ high 
degree of heat as therein specified .” Under this specification he had the un¬ 
doubted right to use heat of any kind then known. In the specification of 
1849, he claims the use of “ a high degree of artificial heat substantially as 
therein described.” And by reference to the specification, it appears that 


28 


judge Dickerson’s opinion. 


he does not in any place describe any particular kind of heat, but uses the 
term artificial as applicable to degrees of temperature above natural heat. 

I do not inquire whether the complainant may use heat in the form of 
steam, for the purpose of curing rubber, as that is not in issue. It is suffi¬ 
cient to say, that if any difficulty exist, it is not by force of the re-issued 
patent. 

The objection that the complainant, in his patent of 1849, claims curing 
rubber in the presence of sulphur , is not well founded. For if it be more 
extensive than the specification of 1844 in that respect, it is not more exten¬ 
sive than his actual invention, as is manifest from his letter to Dr. Jones. 

1 have not thought it necessary to remark particularly upon the testi¬ 
mony on the part of the complainant, as I do not consider that the testimo¬ 
ny of the defendant has overcome the prima facie evidence arising from the 
patent itself. But it is due to Mr. Goodyear to say, that upon examining 
the certificate of Professor Silliman, and other evidence in the case, I am en¬ 
tirely satisfied that he is the original inventor of the process of vulcanizing 
rubber, as stated in his bill; and that he is not only entitled to the relief 
which he asks, but to all the merit and benefits of that discovery. 

Decree accordingly. 


IN CIRCUIT OF UNITED STATES, 

For District of New-Jersey. 


Charles Goodyear, 
vs. 

Horace II. Day. 


This cause having been brought to a final hearing upon pleadings and the 
proofs, and having been argued by counsel for the respective parties, and 
the Court having duly considered the same, 

It is now ordered, adjudged and decreed as follows : 

1. That a perpetual injunction issue against the defendant, according to 
the prayer of the bill. 

2. That it be referred to James S. Green, Esquire, one of the Masters of 
this Court, to take an account of the damages which the complainant has 
sustained by reason of the infringements by the defendant, of the patents in 
said bill mentioned, or either of them, since the first day of January, 1849, 
and in taking such account the Master shall ascertain the amount of goods 
so manufactured or sold and the profits accruing therefrom; and also 
whether any other damages have been suffered or incurred by complainant, 
as directly consequential from such acts of infringement which would not 







CHARLES GOODYEAR AGAINST HORACE II. DAY. 


29 


be compensated by assuming the defendant’s profits as the measure of com¬ 
pensation of the injury to complainant. 

3. It is further ordered and adjudged that the said Master do take an ac¬ 
count of all shirred goods and other articles manufactured by the defendant, 
since the first of January, 1849, in pursuance of or according to the license 
granted to him by the articles of agreement set forth in the pleadings, and 
the amount of tariff due and payable thereon ; and also whether any dama¬ 
ges (and how much) have been sustained by the defendant from the neglect 
or failure of the complainant to protect him in the enjoyment of said license, 
according to his covenants. 

4. It is further ordered, that the defendant, from time to time, as ordered 
by said Master, do appear before him and submit to examination in the ac¬ 
counting herein ordered, and produce such books and papers relating thereto, 
as said Master may direct, and that (besides the evidence already taken in 
this case) the parties have leave to produce and examine witnesses before 
the Master as to the matters of accounting and damages; for which pur¬ 
pose they may have the process of the Court to compel their attendance. 

5. It is further ordered that the said Master make his report with all con¬ 
venient speed ; and that on the coming in of the report, the cause be set 
down for a hearing thereon, and the equities reserved. 

Lastly. All further directions are reserved till the coming in of such 
report and the final decree to be thereafter entered. 








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